Statement of Marybeth Peters
The Register of Copyrights
before the
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary
United States House of Representatives
106th Congress, 2nd Session
May 25, 2000
Sound Recordings as Works Made for Hire
Mr. Chairman, members of the Subcommittee,
I am pleased to testify today on the issue of sound recordings as works made
for hire, and I commend the Subcommittee for holding this hearing and providing
those most interested in this contentious issue the opportunity to present
their views.
Late last year, an amendment incorporated into the Satellite Home Viewer
Improvement Act of 1999, enacted as part of Pub. L. No. 106-113, 113 Stat.
1501 (1999), added sound recordings to the list of commissioned works that may
be considered works made for hire. Performers are concerned about this change
because a grant of rights may be terminated by an author at a time specified
in the Copyright Act unless the author's contribution is considered a
work made for hire. Before the stated date of termination, the author or
performer can renegotiate for a better deal with his original record company,
or upon termination he can make a new deal with a new record company.
Performers argue that their contributions to a sound recording, when made as a
result of a contract as opposed to an employment relationship with a record
company, should not be considered works made for hire. The record industry
believes that the amendment simply clarifies what was existing law, and
confirms that a record company will not be held hostage by one of many
performers or others who may be joint authors of a sound recording, who may
terminate his or her rights even though all of the other contributors have no
desire to terminate.
What I would like to do today is to provide the Subcommittee with the
historical and legal context relevant to the recent amendment and to offer my
evaluation of the merits of the amendment. In order to understand the
significance of the amendment, it is necessary to understand the nature,
purpose and history of the concept of works made for hire, the author's right
to terminate transfers of rights in copyrighted works, copyright protection
for sound recordings, and some other important copyright law doctrines. It is
also necessary to understand developments in the recording industry over the
past few decades.
It is understandable why the recording industry desired the enactment of
this amendment. The amendment was designed to address the prospect that the
rights of record companies to continue to exploit many popular sound
recordings would be in doubt -- and indeed, that it would be unclear who would
have the right to exploit those sound recordings. However, for reasons that I
will discuss later, this was a substantive amendment to the law, not a
technical amendment as some have claimed. I believe that on reflection it is
also apparent that the solution offered by the recent amendment was an
imperfect one, and that Congress should consider further amendments that would
create the proper balance of rights among record companies, performers and
others involved in the creation of recorded musical performances. In the 20th
Century, there have been two comprehensive revisions of the copyright law. The
first revision, the Copyright Act of 1909, was in effect from 1909 through
1977. The second revision, the Copyright Act of 1976, went into effect in 1978
and made many fundamental changes in copyright law. The 1976 Copyright Act has
been amended many times and remains in effect today.
The revision process that led to the enactment of the 1976 Copyright Act
spanned many years, beginning in 1955 with studies by the Copyright Office. To
understand the status of sound recordings in the 1976 Act, it is necessary to
review the history of that revision process. But first, one must understand
certain principles of law that were in effect during the era of the 1909 Act.
Sound Recordings as Copyrightable Subject Matter
Under the 1909 Copyright Act, sound recordings were not protected under the
federal copyright law. They were protected, if at all, under state law. In the
revision process that led up to the 1976 Act, the status of sound recordings
was the subject of much discussion. As early as 1961, the Register of
Copyrights recommended that sound recordings "be protected against
unauthorized duplication under copyright principles."(1)
This topic was controversial, and sound recordings were not included in the
1963 preliminary draft. However, they were included as copyrightable subject
matter in the 1964 revision bill.(2) Congress,
although reluctant to carve out any portion of the general revision bill which
would eventually result in the 1976 Act, responded to the increasingly urgent
complaints made by the recording industry regarding widespread record and tape
piracy. A bill extending limited copyright protection to sound recordings was
passed by Congress and signed into law on October 15, 1971.(3)
It took effect four months later on February 15, 1972.
It is important to note that the 1971 Act did not fix the beneficiaries of
protection in sound recordings. The legislative history states:
The copyrightable elements in a sound recording will usually,
though not always, involve 'authorship' both on the part of the performers
whose performance is captured and on the part of the record producer responsible
for setting up the recording session, capturing and electronically processing
the sounds, and compiling and editing them to make the final sound recording.
There may be cases where the record producer's contribution is so minimal
that the performance is the only copyrightable element in the work, and there
may be cases (for example, recordings of birdcalls, sounds of racing cars,
etc.) where only the record producer's contribution is copyrightable. As in
the case of motion pictures, the bill does not fix the authorship, or the
resulting ownership, of sound recordings, but leaves these matters to the
employment relationship and bargaining among the interests involved.(4)
Works Made for Hire
The work made for hire doctrine provides that under certain circumstances,
the law will deem the employer of the person or persons who actually created a
work to be the "author" of the work. The consequence of the work
made for hire doctrine was and is that the employer can exercise all the
rights of ownership of the work and avoid the consequences of other provisions
of copyright law that have permitted the persons who actually created the work
to recapture those rights. I will discuss those other provisions in a moment.
The 1909 Copyright Act stated that "the word 'author' shall include an
employer in the case of works made for hire."(5)
The Act did not expressly address commissioned works, which left a broad scope
for interpretation. In the cases regarding commissioned works decided under
the 1909 Act, rights were generally held to vest with the hiring party.(6)
The 1976 Act, however, made a clear distinction between works prepared by
employees in the course of their employment and works prepared on commission,
a distinction that is still maintained today. Works prepared by employees in
the course of their employment are categorized as works made for hire, with
authorship, and thus ownership as well, recognized in the employer. In
contrast, commissioned works can only be considered works made for hire if
they fall within certain specified categories, and even then, only if the
person commissioning the work and the person or persons accepting the
commission agree in writing that the work to be created will be considered a
work made for hire.
In the 1976 Act, the types of commissioned works which may be considered
works made for hire under section 101 were limited to: a contribution to a
collective work, a part of a motion picture or other audiovisual work, a
translation, a supplementary work, a compilation, an instructional text, a
test, answer material for a test, and an atlas. The first
four categories were agreed upon in 1965, early in the copyright law revision
process. Compilations, instructional texts, tests, and atlases were added by
the House Committee on the Judiciary in 1966.(7)
"Answer material for a test" was added upon the enactment of the
1976 Act. I will discuss how the 1976 Act's approach to works made for hire
came about in a few moments.
The Termination Right
The Copyright Act permits an author to transfer any or all of his exclusive
rights. Typically an author would do so in return for financial compensation
-- perhaps a single payment or a continuing royalty. As a protection to
authors, the law requires that the transfer be made by means of a signed
written conveyance.
Under the 1909 Act, copyrights could be renewed, after 28 years, for a
further 28 years, resulting in a total of 56 years of protection for works
whose copyrights were renewed. An important feature of renewal was that even
if an author had assigned all of his rights to a publisher or a record company
or somebody else during the first term, by operation of law the author
reacquired those rights at the beginning of the renewal term. Case law
qualified this right to recapture the copyright in some circumstances, but as
a general proposition the renewal copyright belonged to the original author or
his heirs as specified in the copyright statute.
Renewal copyright served an important goal of copyright law: to protect the
author against unfavorable transfers by giving the author of a work the
opportunity to renegotiate his contract and enjoy the fruits of his creative
labors. An unknown author might sell a publisher all the rights in what might
become the Great American Novel for a pittance; the renewal term provided him
with the opportunity to renegotiate those rights and obtain a greater share in
the success of the work. Most works were not renewed presumably because they
had not increased in value during the 28 year first term of copyright or they
were no longer being commercially exploited; however, for those works that did
increase in value or still had commercial viability, the author or more
frequently his widow and/or children did use their second chance to share in
the increased value of the work.
Although the general rule was that the author was entitled to renew the
copyright, there were some exceptions. The most important exception was for
works made for hire. The renewal copyright in a work made for hire belonged
not to the person who created that work, but to the proprietor of the
copyright at the end of the first term, who would be either the original
employer or someone who had obtained the copyright from the employer.
The 1976 revision of the copyright law abandoned the two-term copyright for
all works created in 1978 and thereafter, and adopted a single term running
for the life of the author plus fifty years. In the case of a work made for
hire, which was not deemed to have a natural author, the term was 75 years
from the year of the work's first publication or 100 years from the year of
its creation, whichever expired first. In 1998, these terms were extended by
an additional 20 years.
In abandoning the renewal copyright, Congress did not intend to deprive
authors of the right they had always had to recapture their rights years after
their works were originally exploited. In place of the author's right to renew
the copyright after 28 years, Congress gave the author (or his widow and
children) the right to terminate grants of copyrights made by the author and
reclaim those rights at certain points in the life of the copyright. These
termination rights can arise in two contexts.
Section 203 of the 1976 Copyright Act provides that a grant of a transfer
or license of a copyright that was made by an author in or after 1978 may be
terminated by that author (or his widow and/or children) after 35 years (or up
to 40 years in certain circumstances.). This ability of an author to terminate
his grant of rights is critical to the scope of his protection under the
Copyright Act. The legislative history of the 1976 Act recognized the
importance of the termination right to all authors:
The provisions of section 203 are based on the premise that
the reversionary provisions of the present section on copyright renewal should
be eliminated, and that the proposed law should substitute for them a
provision safeguarding authors against unremunerative transfers. A provision
of this sort is needed because of the unequal bargaining position of authors,
resulting in part from the impossibility of determining a work's value until
it has been exploited.(8)
With certain exceptions, section 203 provides that transfers executed on or
after January 1, 1978 may be terminated 35 years after the date of the grant.
Authors must give notice of their intent to terminate not less than two or
more than ten years from the intended termination date. Termination of grants
made in 1978 could begin, therefore, in 2013, with notices first served in
2003.(9) An author has a five-year window from
the end of the 35-year period of the grant in which to exercise his
termination right.(10) If he fails to do so,
all the rights covered under the existing grant will continue for the term of
the copyright.
A second termination right, set forth in section 304, applies to transfers
executed before January 1, 1978. The 1976 Copyright Act extended the copyright
term for pre-1978 works by 19 years. Congress decided that the beneficiary of
that 19-year extension should be the author, rather than the assignee of
rights in a work. Congress accomplished this by giving the author (or his
heirs as specified in the statute) a right to terminate a pre-1978 transfer of
the renewal copyright effective at any time within a five-year period
commencing fifty-six years after the copyright had been secured. The author
must give notice of his intent to terminate between two and ten years before
the effective date of termination. Because sound recordings were first
eligible for copyright protection in 1972, the first date terminations under
this provision could be effective will be in the year 2028, and the first
notices of such terminations can be served in 2018.(11)
Joint Authorship
Typically, a commercial sound recording will be a work of joint authorship
by a number of contributors. Section 101 of the Copyright Act defines a joint
work as "a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a
unitary whole." Section 201, on ownership of copyright, states that
"authors of a joint work are co-owners of copyright in the work."
Legislative history elaborates: "Under the bill, as under the present
law, coowners of a copyright would be treated generally as tenants in common,
with each coowner having an independent right to use or license the use of a
work, subject to a duty of accounting to the other coowners for any
profits."(12)
Although joint owners of a copyright may independently and concurrently
license any of their rights in the work, such licences are necessarily
nonexclusive unless all of the joint owners join in the grant. Thus, in the
absence of contractual restrictions, each of the joint authors of a sound
recording could grant a different record company the right to distribute the
sound recording, subject only to a duty to account to the other joint authors
for their share of the profits. Of course, the general practice in the record
industry is for all the performers and other contributors to sign
work-made-for-hire agreements as well as to assign all of their rights to a
single record company, which then has the exclusive right to distribute and
otherwise exploit the sound recording.
The exercise of termination rights in works of joint authorship presents
special problems. If each of the coauthors of a work has the independent right
to terminate a grant of rights, the grantee who originally received exclusive
rights from all of the coauthors will be transformed into a nonexclusive
licensee when even a single coauthor exercises the termination right and the
other coauthors do not.
In recognition of the problems that might result if any one of a
potentially large number of coauthors terminates a transfer, the drafters of
Section 203 limited the right of termination in such situations. Section 203
specifies that "[i]n the case of a grant executed by two or more authors
of a joint work, termination of the grant may be effected by a majority of the
authors who executed it." For example, in the case of a rock band, if
five band members were to sign a single transfer agreement, as is standard
practice in the recording industry, at least three out the five members would
have to agree to terminate for the termination to be effective. The minority
members would be bound by the decision of the majority to terminate and would
receive a proportionate share of the reverted rights whether or not they had
signed onto the notice of termination. Legislative history explicitly
acknowledges "the dangers of one or more beneficiaries being induced to
'hold out.'"(13)
However, the members of the band could be joint authors with a producer as
well, although he likely would have transferred his rights in a separate
document. If that transfer was not in the same document as the transfer from
the members of the band, the producer would have an independent right to
terminate his transfer. But as long as at least one of the coauthors (or, in
the case of coauthors who jointly assigned rights, a group of coauthors) has
not terminated his rights, the record company could, irrespective of the
termination of a co-owning artist or producer, continue to exploit the work.
If one but not all artists or producers who jointly authored a work chose to
terminate with the original record company and negotiate terms with a new
company, multiple versions of a single sound recording could in theory be on
the market simultaneously, competing with each other.
In contrast to the Section 203 termination right for transfers executed in
or after 1978, the termination right under section 304 may be exercised by any
of the coauthors of a joint work, even if all the coauthors executed the
same original grant of rights. Such a termination shall affect only that
"particular author's share in the ownership of the renewal
copyright." 17 U.S.C. �304(c)(1).
The Copyright Act offers limited guidance as to who may qualify as a joint
author. Section 101 defines a "joint work" as "a work prepared
by two or more authors with the intention that their contributions be merged
into inseparable or interdependent parts of a unitary whole." The trend
in recent cases has been to limit the number of people who, when contributing
to the creation of a copyrightable work, can claim to be joint authors. For
example, in Childress v. Taylor, 945 F.2d 500, 509 (2d Cir. 1991),
the court held that "equal sharing of rights should be reserved for
relationships in which all participants fully intend to be joint authors. The
sharing of benefits in other relationships involving assistance in the
creation of a copyrightable work can be more precisely calibrated by the
participants in their contract negotiations regarding division of royalties or
assignment of shares of ownership of the copyright . . . ." The court
concluded that a prerequisite of joint authorship is a mutual understanding
among the contributors that they are to be regarded as joint authors. 945 F.2d
at 508. The importance of control over the finished work has also been
emphasized in determining authorship.(14) To
the extent that there is a trend that limits the nature or number of
contributors who can claim joint authorship, the courts are indirectly
ameliorating the problem caused by the existence of concurrent rights of
termination among coauthors.
Sound Recordings as Works Made for Hire in Legislative History
of the 1976 Act
As already mentioned, during the Copyright Law Revision efforts of the
1960s, the old work-for-hire doctrine of the 1909 Act was revamped. After
extensive negotiations supervised by Congress and the Copyright Office,
representatives of authors, composers, book and music publishers and motion
picture studios succeeded in redefining the concept of works made for hire.
They settled upon the two-pronged approach to works made for hire discussed
above, which encompassed both traditional works made by employees in the
course of their employment and certain classes of specially commissioned
works.(15)
With respect to specially ordered or commissioned works, each category was
proposed by a particular copyright industry and each proposed category was
fully debated. The question considered was why should a particular type of
work be treated as a "work made for hire." Works included in these
categories tend to be works done by freelance authors at the instance,
direction, and risk of a publisher or producer where it was argued that it
would be unfair to allow such authors to terminate assignments of rights.
Other exceptions (contributions to collective works, parts of motion
pictures), were based on the fact that the resulting work involved numerous
authors and that permitting terminations of grants of rights to such works
would cause chaos.
Although sound recordings were being contemplated as copyrightable subject
matter contemporaneously with the mid-1960's debate over works made for hire,
they were never proffered as a category to be added to the list of
commissioned works.(16) Thus, sound recordings
were never considered for inclusion as a category in the specially ordered or
commissioned work made for hire provision. Had the recording industry
suggested inclusion of sound recordings, it is unclear what the result might
have been given that work made for hire is an exception to the general rule of
recognizing the creator as the author. When they were discussed in a
work-for-hire context at all, it was peripherally.
Recording Industry Practice
Although the recording industry has changed considerably since the 1960s,
the contracts signed between record companies and performers appear to have
changed very little. Most contracts contain clauses specifying that the works
produced by performers are works made for hire. Such contracts generally
contain an additional clause providing that if the work created is found by
courts to fall within neither prong of the definition of works made for hire,
that the performer assigns all his rights to the record company.
Under the law as it existed before the 1999 amendment, courts assessing
whether an individual sound recording was a work made for hire had to
determine whether sufficient evidence existed of an employer/employee
relationship to qualify the sound recording under the first prong of the
definition or whether the sound recording could be placed within one of the
categories of commissioned works which could be considered works made for hire
under the second prong.
In the 1960s, record companies exercised a great deal of control over the
creation of a sound recording, employing back-up singers and engineers and
owning the studio space in which featured artists would record. In this
framework, record companies uniformly asserted an employment for hire
relationship with featured artists.(17) It
seems possible that because of this employment relationship, record companies
did not seek to include sound recordings as a category in the specially
ordered or commissioned prong of the work made for hire definition.
That level of involvement by the record companies in the creation of sound
recordings has generally diminished over the last few decades, so that now, in
many cases, record companies simply provide funds at the
"front-end," and distribution at the "back-end," of a
sound recording's production. By hiring or acting as producers, by retaining
back-up singers, musicians and engineers, and by recording in their own
studios or at independent studios, featured artists have increasingly come to
control the creative elements of a sound recording, making it considerably
more difficult now for record companies to characterize artists as employees
producing works within the scope of their employment. This is particularly
true given the factors used by the Supreme Court to distinguish between
employees and independent contractors in Community for Creative
Non-Violence v. Reid.(18)
Another trend in the record industry that may just be beginning, but which
may have an equally significant impact on the issue of sound recordings as
works made for hire, is a possible change in the way in which sound recordings
are distributed. For most of the period since sound recordings were given
federal copyright protection, sound recordings have been distributed
predominantly in the form of albums, first as long-playing vinyl records and
later as compact disks. That distribution model may be changing with the
advent of the internet and other means of digital distribution of sound
recordings. Consumers may no longer purchase sound recordings in the form of
albums containing performances of a dozen or more songs. Instead, they may
purchase individual performances by downloading them from the internet or by
copying them onto a compact disk at an electronic kiosk in a record store,
perhaps in the form of customized albums containing a selection of
performances chosen by the consumer. This trend may have serious implications
for a theory that record companies relied on before the recent amendment to
support their claims that specially commissioned sound recordings qualify as
works made for hire: the theory that a record album is a collective work or
compilation.
Pre-November 29, 1999, Recordings
My conversations with representatives of both performers and record
companies have confirmed my previous understanding: recording contracts almost
always contain provisions which deem the sound recordings and any
contributions to them works made for hire. Copyright Office records show that
claims to copyright for sound recordings filed by record companies in the
1970's named a record company as author by virtue of the work made for hire
doctrine and that today featured artists as well as record companies have
filed claims to copyright listing themselves as authors by virtue of the work
made for hire doctrine.(19) However, the fact
that work-for-hire agreements and copyright registrations as works for hire
have been made does not lead to the legal conclusion that the sound recordings
that are the subjects of those agreements and registrations are indeed works
made for hire. If a specially ordered or commissioned work does not fall
within one of the categories set forth in the second part of the statutory
definition, the agreement of the parties cannot transform it into a work made
for hire. With respect to copyright registration, the Copyright Office does
not inquire whether a sound recording meets all the requirements for a work
made for hire. Additionally, the fact that the recent amendment to the
definition of works made for hire corresponds to record industry practice does
not make it a technical amendment if that industry practice did not correspond
to the legal requirements for works made for hire.
Record companies have argued that even under the law as it existed before
last November, the vast majority of commissioned sound recordings qualified as
works made for hire because they were contributions to collective works or
compilations, two categories of works included in the statutory definition.
This theory may well be valid under traditional distribution models. A record
album may well be considered a collective work, and a sound recording of each
performance included on the album therefore may well be a contribution to a
collective work. The courts have not yet addressed this issue, although
several courts have stated that sound recordings as such are not among any of
the nine categories of specially ordered or commissioned works.(20)
Some representatives of performers have rejected the theory that an individual
sound recording on an album can usually be considered a contribution to a
collective work, arguing that an album of songs by the same artist, delivered
by that artist to a record company, does not qualify as a collective work.
Even if most sound recordings do qualify as contributions to collective
works, it does not make the recent amendment, which added sound recordings as
a new category in the definition of works made for hire, a technical
amendment.(21) In fact, if the future
distribution models that may abandon the concept of the album come to pass,
the amendment adding sound recordings to the list of candidates for
work-make-for-hire status will prove to be anything but technical.
In any event, I take no position today on whether sound recordings will
usually qualify as contributions to collective works. It will be up to the
courts to resolve that issue. It is certainly likely that at least some
contributions to sound recordings will be deemed to be contributions of
individuals who did not work for hire. In such cases, these authors will have
the right to terminate their contracts and may elect to do so in the
exceptional case where the value of their rights has substantially increased.
Analysis of Amendment and Recommendation
As I have just stated, I do not consider the recent amendment to have been
a technical amendment. It changed existing law by adding sound
recordings as a category of commissioned works which may be considered works
made for hire.
However, because that amendment has already been enacted, the more
important question is whether it has substantive merit. I believe that there
is much merit to the amendment. Most sound recordings will have a number of
potential coauthors, including all of the musicians who perform on the
recording, the producer of the recording, and perhaps others. There could
easily be a dozen or more potential coauthors of a single sound recording. If
the sound recording was not a work made for hire, any one of those coauthors
(or, in the case of coauthors joining in a single grant, any group of
coauthors) would have a right to terminate pursuant to section 203. Even where
many of the performers have joined in a single grant, there are likely to be a
number of other contributors to the performance who were not parties to the
same contract and who could independently exercise the right of termination.(22)
If any one of a number of coauthors has the right to terminate the grant of
rights, the record company might be faced with a situation in which it can be
held hostage to the demands of the individual artist who knows that he can
deprive the record company of the exclusive right to exploit the work simply
by assigning his nonexclusive rights to another record company, or by
exercising those rights himself, despite the fact that the original record
company continues to enjoy its grants of rights from his coauthors. The
original record company's incentive to continue to exploit the work under such
circumstances will be greatly reduced if somebody else is also in a position
to exploit the identical recording.
Thus, record companies have legitimate grounds to fear that even if only
one of the many potential claimants to the status of "author" of a
particular sound recording elects to terminate the assignment of his interest
in the copyright, neither the original assignee nor anybody else will be able
to exercise exclusive rights in the work, and the existence of a multiplicity
of owners of nonexclusive rights is likely to make many if not most works
unmarketable when a single coauthor terminates. The addition of sound
recordings to the list of works eligible to be commissioned works made for
hire offers a solution to this problem.
However, I am not persuaded that the recent amendment achieves the proper
balance. It is a basic principle of copyright law that authors should be able
to terminate their initial grants of rights. Consistent with the 1976 Act, in
the absence of a specific reason for making sound recordings works made for
hire, the right to terminate should remain with authors. With respect to works
other than sound recordings, authors have already terminated grants under
section 304, and the practice seems to have achieved Congress' goal and not
caused undue harm.
The Copyright Office believes that those who contribute significant
authorship to a sound recording should have the right to terminate. I will
refer to these persons as "key contributors." I use the term
"key contributors" because, as the recording industry has correctly
emphasized, permitting every contributor to a sound recording to exercise
termination rights could make the exploitation of a sound recording
unworkable. I do not proffer this term as a proposed statutory term, nor do I
offer any specific legislative language at this time. Rather, I offer it as a
concept that should seriously be explored.
Who is a "key contributor"? It is someone who has made a major
contribution of copyrightable expression to a sound recording. Ordinarily, it
would include the featured performer or performers. For example, Frank Sinatra
and Madonna would clearly be key contributors of authorship to the sound
recordings on which they perform. Each of the members of the Beatles and
Metallica would also be key contributors. In contrast, a background musician
would not be a key contributor. Exempting those key contributors from the work
made for hire provisions should result in only a limited number of potential
terminations. This could be accomplished by retaining the inclusion of sound
recordings among the categories of works eligible to be commissioned works
made for hire, but excluding the contributions of these key contributors from
work-made-for-hire status. The result would be that the sound recording would
be a joint work that is in part a work made for hire and in part a work of
individual authors.(23)
This concept is similar to the approach that has been suggested to me by
representatives of performers; the language shown to me would exclude a
featured recording artist who is defined as "... an artist, whether an
instrumentalist or vocalist, who has a royalty contract with respect to the
distribution of the sound recording." This definition may not
sufficiently limit the class with termination rights because secondary
performers may also receive royalties.
Consideration should also be given to whether producers of sound recordings
should, at least in some circumstances, also be able to terminate as key
contributors. There are many examples of producers, such as Quincy Jones, Phil
Spector, and Babyface, whose contribution of authorship to a sound recording
can equal or even exceed that of the featured artist. The voices of record
producers have not yet been heard in this debate, and their views and
contributions should be considered.
I believe that this approach could address both the record industry's
understandable concern that rights to sound recordings may be placed in limbo
due to the multiplicity of potential claimants with a right to terminate, and
the performers' complaint that the recent amendment has deprive them of the
right enjoyed by all other authors to recapture the value of their creative
contributions. It should the exception rather than the rule where there will
be so many key contributors to a sound recording that record companies and
performers will experience great difficulty in sorting out the consequences of
a coauthor's exercise of the right of termination. And those performers who
common sense tells us are, as a practical matter, the real "authors"
of sound recordings would be able to exercise the termination rights enjoyed
by all other authors.
If the Subcommittee finds that my suggestions are worth exploring, I would
be pleased to work with the Subcommittee and with representatives of the
record companies, performers, producers and other interested parties in an
effort to resolve this contentious issue.
1. Copyright Law Revision Part 1: Report of the
Register of Copyrights on the General Revision of the U.S. Copyright Law,
House Comm. on the Judiciary, 87th Cong., 18 (Comm. Print, 1961).
2.Copyright Law Revision Part 5: Supplementary
Report of the Register of Copyrights on the General Revision of the U.S.
Copyright Law: 1964 Revision Bill, House Comm. On the Judiciary, 89th
Cong., 7 (Comm. Print, 1965).
3. Pub. Law. No. 92-140, 85 Stat. 391; see Omnibus
Copyright Revision: Comparative Analysis of the Issues 64-65 (Arthur B.
Hanson, ed.) (1973).
4. H.R. Rep. No. 92-487, at 5 (1971); S. Rep. No. 92-72,
at 5 (1971).
5. Act of March 4, 1909, ch. 319, 35 Stat. 1075
(codified in 1947 as 17 U.S.C. � 26; repealed 1978).
6. See Melville B. Nimmer and David Nimmer, Nimmer
on Copyright, � 5.03[B][2][c].
7. H.R. Rep. No. 89-2237, at 116 (1966).
8. H.R. Rep. No. 94-1476, at 124 (1976).
9. It should be noted that the provisions of section 203
do not affect the ability of the parties to terminate a contract before the
35-year grant period has expired. Any new grant of rights by an author would
trigger a new termination right.
10. However, the law provides that a derivative work
prepared under the original grant can continue to be utilized under the terms
of that grant.
11. A similar termination right was recently added with
respect to the 20-year extension of the term of copyright enacted in 1998.
Pub. L. No. 105-298, 112 Stat. 2827.
12. H.R. Rep. No. 94-1476, at 120 (1976).
13. H.R. Rep. No. 94-1476 at 125 (1976).
14. See, e.g., Aalmuhammed v. Lee, 202 F.3d
1227 (9th Cir. 1999).
15. The 1963 preliminary draft defined a work made for
hire as "a work prepared by an employee within the scope of the duties of
his employment, but not including a work made on special order or
commission." The last phrase was vehemently opposed by book publishers
and others. The 1964 bill attempted to solve the problem by including in the
definition "a work prepared on special order or commission if the parties
expressly agree in writing that it shall be considered a work made for
hire." This approach was rejected by representatives of authors.
16. Telephone interview with Barbara Ringer, former
Register of Copyrights, (May 16, 2000).
17. See, e.g.,Copyright Law Revision Part 3:
Preliminary Draft for Revised U.S. Copyright Law and Discussions and Comments
on the Draft House Comm. on the Judiciary, 88th Cong., 352-358
(comments, Sidney A. Diamond, London Records, writing on his own behalf,
February 11, 1963).
18. Community for Creative Non-Violence v. Reid,
490 U.S. 730, 751-752 (1989) ("the source of the instrumentalities and
tools; the location of the work; duration of the relationship between the
parties; whether the hiring party has the right to assign additional projects
to the hired party; the extent of the hired party's discretion over when and
how long to work; the method of payment; the hired party's role in hiring and
paying assistants; whether the work is part of the regular business of the
hiring party . . .").
19. While most registrations of sound recordings are
filed by record companies as employers for hire, some registrations are filed
by performers as employers for hire. Bruce Springsteen is an example of a
performer who is registered as an employer for hire.
20. See, e.g., Staggers v. Real Authentic
Sound, 77 F. Supp. 2d 57 (D.D.C. 1999); Ballas v. Tedesco, 41 F.
Supp. 2d 531 (D.N.J. 1999); Lulirama Ltd. v. Axcess Broadcast Services,
Inc., 128 F. 3d 872 (5th Cir. 1997).
21. Representatives of performers have expressed
concern that the fact that the recent amendment was labeled a "technical
amendment" might influence some court in the future to conclude that
Congress must have intended sound recordings to be a category of works
eligible to be commissioned works made for hire even before the amendment was
made. I do not believe that the fact that this amendment was labeled as
"technical" carries any weight in interpreting the state of
preexisting law. In determining whether sound recordings were intended to be
an eligible category for works created from 1978 through November 29, 1999, it
is the language of the 1976 Copyright Act and the intent of the 94th
Congress that enacted that law that is relevant.
22. The termination right under section 304 gives each
coauthor a right to terminate, whether or not the coauthor joined in a single
grant. But because that right pertains only to grants made before 1978, when
most if not all sound recordings probably were works made for hire under the
more liberal definition of the 1909 Act, the section 304 termination right is
not likely to be significant for sound recordings.
23. This would be nothing new. Already it is possible
for two or more persons to collaborate on a work, and for one of the
collaborators to be contributing as an employee for hire and another to be
contributing as an author in his own right.
